The present article is
intended to introduce the ROC Patent Law newly amended or promulgated on January
3, 2003, although it is not yet known on which date the Executive Yuan will
eventually prescribe this amended Law to take effect.

Background
Statement

If there really is a
global country in the final future, it is believed that there must be a World
Patent Law first.If there really
is a World Patent Law, there must be nearly uniform patent laws respectively in
various countries.Through efforts
on harmonization or amendments through pressures coming from domestic or foreign
sectors, one can find that Patent Laws in various countries are getting more and
more uniform through amendments after amendments reflecting subjective
harmonization or objective international treaty.

Summary
of Developments

Some people take that
the Chinese are relatively conservative.Accordingly,
some articles representing the special legal tendency only appearing in the
Taiwanese or Chinese society are maintained peculiar to the world for a great
many of years.For example, before
the amendments take effect on October 26, 2002, a change of the inventorship
means a change of the filing date.Such
measure appears to be inhumane.Nevertheless,
it was the practice that we had.

The substantive
examination of patent applications plays an important role in the patent system.Taiwan Patent Office exercises substantial efforts in promoting the
substantive examination quality, which has been felt.Nevertheless, improving the examination quality does not involve in only
one factor or aspect.We must
confess that there still exists a not small room for us to give chase to the
standard of patent-advanced countries.

Through conservatism,
over-elaborate formalities are musts.On
the contrary, due to economic achievements arrived in the past few decades, the
Taiwanese are confident and yearn to be nationals of an advanced or fully
developed country, just like the US.Accordingly,
more and more ‘advanced’ or even ‘promoting’ or commercially
‘encouraging’ articles in the Patent Law appear.For example, the opposition system after publication is abolished in
order to be silently or inherently uniform with the US practice.Nevertheless, it appears that the responsible law-amending officers fail
to take notice of the fact that the substantive examination quality of Taiwan is
not comparable to that of the US.Under
such circumstance, would it be appropriate for Taiwan to abolish the opposition
system at the present stage?Especially,
it appears to be untrue for the law-amending officers to take that the
opposition system is no more popular in the international legislative tendency
since it would seem that most of countries still have the opposition system for
patent applications although it is true that utility model patents do not
normally have an opposition system.

The utility model
system here has a great change now.A
utility model is considered to have a lower creation level although there is no
human being in this world who can definitely define where is demarcation line
between higher and lower creations.Till
now, all patent or utility model Taiwanese applications can be filed as a
utility application, which might depict there appears to be some kind of
ridicule that a utility model is a creation of a lower level.As is seen in many countries, the utility model here is
stipulated to be subject to a formal registration only so that no more
substantive examination therefore is necessary.As in the past, we prefer to have no provision of the utility
model in the patent law just like that in the US and the UK since the world will
appear to be more real and simple without the utility model system.

Criminal penalties are
also abolished for patent infringements so that we feel we are living in a more
civilized country, although the US might feel we are not a good boy since she
might still consider the counterfeiting phenomenon in Taiwan is not diminishing.

At
the present time, under the Taiwan practice, a lawyer or a judge having no
technical background or an account having neither law background nor
technological knowledge can serve as a patent agent.As a result of such humorous or ridiculous provisions we have, a new
patent attorney law has been in the process of being enacted for more than 10
years during which one of major controversies is whether the presently
practicing patent agents or attorneys should be tested to pass the Patent
Attorney Examination de novo.After
a long period of struggle, the presently practicing patent agents are admitted
to continuously provide their services and are called as patent agents.Only those who pass the Patent Attorney Examination will be called as
patent attorneys.Other newcomers, e.g. any new attorney-at-law who can
automatically provide services for the patent-related matters are all classified
as patent agent.Accordingly, an
agent under the amended Patent Law includes a patent agent and a patent
attorney.

*Electronic filing

As
the information industry advances, the paperless process is contemplated or
strived for by various governments.Electronic
filing can be electronically processed or even programmed to be automatically
responsive as desired in a most efficient manner.Such expediency is apparent.Nevertheless, it is uncertain whether such measure can really achieve the
purpose of being paperless as originally pursued since it appears that the
examiner will do his examination work on a hard copy and that the applicant and
the patent attorney need have hard copies on their respective files.After an indefinite proper period of preparation, the Intellectual
Property Office (IPO) will not only introduce such electronic filing system but
also has the ambition, under the slogan of E-government, to permit any
petitioner’s electronically looking into the file wrapper.

*Highly innovative
invention

As
is known and traditionally defined here, a creation being ‘highly
innovative’ falls into the purview of an invention and one being not ‘highly
innovative’ is categorized as a utility model.Logically, such demarcation is understandable.Nevertheless, it is hard to explain a utility model in Taiwan can
successfully seek patented a utility patent in the US, especially in view of the
fact that the US has a technical level apparently higher than that in Taiwan.

Perhaps, the
law-amending officers or personnel find the above truth appears to be not so
reasonable.Accordingly, the words,
‘highly innovative’, for defining in assistance the "Invention"
are deleted from the article.

Through such amendment,
it would appear that the IPO will exercise more conservative attitude in taking
that an application is not qualified as an invention because of its
progressiveness, non-obviousness and/or technical advancement, degree or level.Accordingly, the applicant can pay less thoughts or attention in
determining whether it should file an application as an invention or utility
model.In other words, an
application should be filed as an invention application if there exists any kind
of consideration as to whether it should be filed as one for which kind of
patent application.

*Novelty and
non-obviousness

As
is well known, to lose or ruin the novelty, the following three events, i.e.
having appeared in a publication prior to filing, having been put in public use
prior to filing, and having been publicly known prior to filing can play the
same import or result in the same consequence.Since these three events can be told apart easily and the last one cannot
necessarily be categorized into or included in the former two, the last one is
added into the law in order to make up the apparent legal loophole not seen in
the patent law of major advanced countries.

There
are exceptions to the loss of novelty.Specifically,
with the provision of a grace period, i.e. normally 6 months in various
countries having first-to-file system, an application can still be filed for
patent within six months from the date on which an application is occurred with
any of the following events, i.e. disclosed due to research or experiment,
having been displayed in an exhibition sponsored or approved by the government
or disclosed without the intention of the applicant.For the last event, the presently law cannot rescue such situation.Although the applicant might have the fault to strictly keep its creation
from being disclosed, this is not equivalent to the fact that it fails to
carefully safeguard its creation.This
is because in such competitive time, it requires a lot of prerequisites which
must be seamlessly met before either an applicant or an invention can find its
success in the world or market.People
are fragile and the world is full of accidents.Accordingly, if an invention is unintentionally disclosed by a third
party, the innocent inventor or applicant should be reserved the rights for
effectively filing in the grace period an application.According to the legislative reasons, such amendments for the exception
for unintentional disclosure by a third party will make the law to be in line
with the provisions of EPC and Japanese patent law.

According to the
amended law, an application will be deemed obvious if easily achievable by one
having ordinary skill in the pertinent art by utilizing the existent technology
prior to filing.Specifically,
according to the underlying reasons for the law amendments, there are three
emphases upon determining whether an application is non-obvious or inventive,
i.e.:

1. Judging from the
published techniques prior to filing: Accordingly, it is made clear that the
relevant techniques which can be put into consideration should be known or
published ‘prior to filing’;

2. Judging from the
techniques of the pertinent art: The current clause of determining whether an
application is ‘utilizing the known technique or knowledge’ is alleged to be
unnecessary.Accordingly, the
amended clause is asserted to be more clear and correct; and

3. Judged by one having
ordinary knowledge in the pertinent art: The term of ‘one having ordinary
knowledge in the pertinent art’ is changed from ‘one skilled in the art’
in order to be allegedly more clear.

*Unpatentable
subject matters

The
Article of unpatentable subject matters is amended.Specifically:

1. The item ‘new
animal or plant variety, provided this limitation shall not apply to the process
for cultivating new plant variety’ is changed into “Animal or plant variety
and essentially biological method for producing animal or plant, provided this
limitation shall not apply to a microbiologically producing method.”The reasons include:

A.According to the provisions of TRIPs, each member can preclude the
patentability of ‘animal or plant variety’ or ‘essentially biological
producing method’;

B.Although Mainland China precludes the patentability of ‘animal or plant
variety’ but include the patentability of their producing method, her
examination guidelines preclude the patentability of ‘any animal or plant
variety’ or an ‘essentially biological producing method’;

C.European Union 98/44 Directive and Article 53(b) of European Patent
Convention (EPC) preclude the patentability of ‘animal or plant variety’
except ‘animal or plant’ not belonging to a ‘variety.’In addition, EPC excludes an ‘essentially biological producing
process’ but not a ‘microbiological producing process’; and

D.The current law sets a standard of patentability with the distinction of
animal or plant, which is apparently different from the international practice
and thus should be amended to comply therewith.

2. ‘Method of
operation’ is amended into ‘method of surgical operation’ for
clarification.

3. Items 3 through
5, i.e. ‘scientific theories or mathematical methods,’ ‘rules or methods
of playing games or sports,’ and ‘other methods or schemes executable only
through involvement of human deduction or memory abilities’ are deleted.Reasons for this are not declared.Nevertheless,
they possibly include:

A.It is vividly apparent that scientific theories per se are not patentable.Pure scientific theories per se cannot work for human being before they
are applied in daily utilization;

B.By the same token, pure mathematical or playing methods or rules per se
cannot contribute to the human society before they are employed in the daily
life;

C.Through the introductions of software patents, business method patents
and e-commerce patents, principles, schemes or rules are significantly shocked
from the exclusions of patentability if they are found to have a pre- or
post-activity.

*Formalities
(Article 25)

Prerequisites
for filing date are released by:

1. Dispensing with
the requirement of submitting an oath executed by the inventor upon filing; and

2. No more
requiring the payment of the official fee as a prerequisite of obtaining an
effective filing date;

*Format in
specification (Article 26)

Claims
are clearly defined to be included as a part of specification by referring to
the provisions of Article 36 of Japan Patent Law, 35 USC 112 and Article 83 of
EPC.

The
requirements of descriptions of ‘pertinent prior art, object of invention,
technical contents, features and advantages’ in the specification are
superseded by being ‘definitely and sufficiently disclosed’ in order to
conform to the international practice under Article 29(1) of TRIPs.

In
order to specifically provide how claims should be recited by referring to
Article 36 of Japan Patent Law, Article 84 of EPC and Article 26 of Mainland
China Patent Law, there is provided a paragraph, ‘Claims shall precisely
recite the claimed invention.Each
claim shall be concisely recited and must be supported by invention description
and drawing.’

*Priority claim
(Article 27)

The
Amended law clearly reflects the fact that effective from January 1, 2002, any
WTO member, in addition to a foreign country mutually recognizing priority claim
with the Republic of China, can claim priority for its ROC application.

Furthermore,
paragraph 3 provides that ‘A foreign applicant who is not a national of a
non-World Trade Organization member and whose country of origin does not
mutually recognize the priority claim with the Republic of China can still claim
priority under the first paragraph if it establishes residence or business
office in the territory of a World Trade Organization member or mutually favored
country.’

*Requirements for
enjoying priority (Article 28)

The
requirement of reporting the application number of a priority application upon
filing is abolished through reference to Article 4(D)(1) of Paris Convention.

In
the second paragraph, ‘the applicant shall also submit within four months from
the following date of filing the filing document certified to be accepted by
government in the preceding country,’ the term “four months” is changed
from the current ‘three months’ in order to comply with the provision of
Article 4 of Enforcement rules of the Patent Law Treaty passed by the
international diplomatic conference held on June 1, 2000 by WIPO, which provides
that the term for submitting the priority document should not be less than 16
months from filing the priority application.Accordingly, this paragraph appears to include an error that it takes
every application claiming priority is filed in the Taiwan IPO on the date after
exactly one year from the priority application so that the applicant must submit
the priority document within four months from the local filing date.Nevertheless, it seems that this is not the truth.Therefore, it would appear that the clause ‘four months from the
following date of filing’ in this paragraph should be replaced by ‘sixteen
months from the priority date.’

*Biological material
(Article 30)

According
to the strict academic definition for microorganism, it does not include a
substance, e.g. plasmid, capable of indirectly self-reproducing in a biological
body.Accordingly, the term
‘microorganism’ is revised as ‘biological material’ through reference to
Article 23(b)(3) of the Enforcement Rule of EPC and Article 25 of the
Enforcement Rule of Mainland China Patent Law, which both interpret the
‘biological material’ as “any material containing genetic information and
capable of reproducing itself or being reproduced in a biological system.”

*Single general
inventive concept (Article 32)

The
current provision about unity of invention is alleged to be not enough
deliberative and should be amended to be harmonizing with the international
trend since Taiwan has become a member of WTO and there is an initial consensus
on the concept of unity of invention in the Substantive Patent Law Treaty draft.Accordingly, the second paragraph is amended into ‘two or more
inventions belonging to a single general inventive concept may be filed for
application in an application’ through references to Article 7 of said draft,
Article 82 of EPC, Article 13(1) of Enforcement Rule of PCT and Article 31 of
Mainland China Patent Law.As to
concrete contents of ‘a single general inventive concept,’ they shall resort
to the enforcement rule and the examination guidelines.

*Abolished
opposition system

Under the current
system, the public inspection is exercised through the opposition system and the
invalidation system respectively before and after paying the issue fee.Specifically, an allowed application will be automatically published if
no delay for publication is requested.Any
one considering the application incapable of meeting the patentable requirements
can institute an opposition proceeding by accompanying evidences within three
months from its publication.The
patent certificate will be issued only after the opposition procedure is
irrevocably decided.Nevertheless,
unless there is no opposition within the 3-month publication period, it is
uneasy or never a short process for an opposition procedure to be irrevocably
decided.This is because:

1. For an opposition
procedure to be irrevocably decided, it must subject to the opposition procedure
before the IPO, an appeal procedure before the Board of Appeals in the Ministry
of Economic Affairs, a first instance litigation before the higher
Administrative Court and a second or final instance litigation before the
Supreme Administrative Court, each of which might cost well more than one year.Before all these proceedings can come to an end, the applicant cannot
obtain the patent certificate for several years even after it has obtained an
action granting the invention or application;

2. More specifically,
although the applicant will have an ad interim patent right after receiving the
action granting the application, such ad interim patent right in fact cannot
impart to the applicant any practical or substantial interests whenever there is
an opposition.This might be the
core reason why the opposition system is advocated to be abolished;

3. More complicatedly,
during the 3-month opposition period, different persons can respectively file
different oppositions before the IPO, which must assign different groups of
examiners to respectively examine the different oppositions.Although similar situations can be found in theory even in the
invalidation proceedings, it would appear that the opposition system easily
allures ‘smart’, ‘bad’ or ‘cunning’ “merchants” to lodge a lot
of similar oppositions with interposed evidences and arguments through the
adoption of straw opposers.This
situation will become more true especially when a competitor become known that
its primary opponent has been granted an application which will threat its
commercial chance or embarrass its commercial promotion.The primary opponent will thus suffer a serious headache period and feel
frustrate about what the patent system can finally do it what kind of real
favors.Some cunning guys use such
opposition system to obstruct a goodwill-applicant in duly obtaining a patent
certificate.Accordingly, voices
advocating the abolishment develops in spite of scrupulous considerations
whether accompanying systems or regulations can duly cope with such
law-amendment;

4. According to the trend of
international legislative practice alleged by IPO by citing that the amended
Patent Laws in Japan and Korea have changed from pre-issuance issuance
opposition system into the post-issuance opposition system and that Mainland
China has abolished the opposition system, whether there should be the existence
of the opposition system should be subject to be reviewed?There are two aspects to be considered from our viewpoint:

A. Post-issuance
opposition system is irrelevant to cancellation, invalidation or nullification
system: This is because the post-issuance opposition is a kind of opposition.Accordingly, we can obtain:

a. To escape from the
shortcomings of the opposition system is not necessitated to abolish the
opposition system.Similarly,
abolishing the opposition system needs not be a must to obviate the shortcomings
accompanying the opposition system;

b. Since the post-issuance
opposition system is a kind of opposition system, both Japan and Korea have not
abolished their opposition system.Accordingly,
taking the adoption of the post-issuance opposition system in Japanese or Korean
legislations, which in fact, show that the opposition system is necessary but
has been changed from the pre-issuance opposition one into the post-issuance
opposition one as a primary reference to totally abolish the opposition system
in this country appears to be non-convincing or unpersuasive.

c. Specifically, if the
opposition system is to be abolished thoroughly, reasons as to why there still
exist kinds of shortcomings even for the post-issuance opposition system should
be discussed and examined to a further detail, in addition to the analyses of
shortcomings made to the pre-issuance opposition system.

B. It has been
recognized that the Patent Law of Mainland China adopts quite a lot of spirits
from the Patent Laws in Germany, Japan and/or even Taiwan.Nevertheless, before referring to the Chinese Mainland Patent Law decided
in 1993 to follow the US patent practice without the opposition system, it would
appear better to further research the exact reasons for such drive.The mere formal adoption without knowing why something should be adopted
seems to be not a very good idea.

5. Under the current Taiwan
Patent Law, any interested party can still institute the invalidation
proceedings after the issuance of the patent certificate.According to IPO, the invalidation proceeding under Taiwan Patent Law
corresponds to a cancellation or nullification action in the foreign countries.Specifically, under their proceedings, the proceedings for
invalidation are different from those for opposition.Furthermore, appeals or relief procedures for actions or
decisions made in the invalidation and opposition proceedings are mutually
different from each other in those countries.Nevertheless, causes, procedures and provisions for invalidation and
opposition under Taiwan Patent Law are generally the same.Accordingly, through the abolishment of the opposition system, according
to the IPO:

A. Provisions or
causes in the Patent Law for opposition and invalidation are integrated in order
to retain the public inspection spirit in the law;

B. The patent
dispute procedure is simplified;

C. The justifiable
rights of the patentee can be secured earlier so that the patentee needs not
necessarily be trapped in the tedious dispute procedure;

D. A published
application can immediately be granted with the patent rights and the patent
certificate by paying the issue fee.

*New matter v.
originally disclosed scope (Paragraph 4 of Article 49)

Article
49(3) of the most newly amended Taiwan Patent Law provides that “after 15
months from the filing date of an invention patent application, the applicant
may supplement or amend specification or drawings only in the following various
dates or periods:

1. At the same time of petitioning substantive examination;

2. Within three months after service of the notification that the application
proceeds with substantive examination where the
substantive examination is requested by one other than
the applicant;

3. Within the period of response to the pre-action notification of the
patent-dedicated office;

4. At the same time of requesting reexamination or within the period within
which the reexamination briefs may be supplemented.”

The
above paragraph has no problem.

Article 49(4)
stipulates that “supplement or amendment according to the preceding three
paragraphs shall not be made beyond the scope disclosed by the original
specification or drawings upon filing.”Independently
reading or understanding this paragraph or the preceding paragraph will not
raise any issue.Through carefully
reading them, we might be able to find or clarify the following potential
problems:

1. According to
Article 26(1) of the newly amended Patent Law, a specification of a patent
application shall by its definition include the claims.Before we discussing the matter into a greater detail, we should define
what is scope as provided in the article, which in our opinions, can be
categorized into two types, namely:

A. Scope of claims:
The protecting scope of a patent is conferred by the claim language in the
specification.It is believed that
this is the traditional meaning of ‘scope’ related to patent rights or
patent specification and will not be further mentioned due to its acquaintance
with the general patent practitioner.

B. Scope of
disclosure: This term might be easily understandable through the introduction of
the concept of “new matter.’Specifically,
any addition or deletion from the original disclosure which will cause the
contents of the added or deleted specification differ from those of the original
text will be regarded as a new matter.In
other words, any change will not be regarded as having escaped from the original
scope of disclosure if said change does not involve in any new matter.

2. Accordingly, the
scope disclosed by the original specification will theoretically include:

A. That disclosed
by claims (CLAIM SCOPE): This scope is to determine under which circumstance the
patentee can accuse a patent infringement by a product;

B. That disclosed
by descriptions of the specification other than claims (SPECIFICATION SCOPE): A
patentable subject matter must come in the SPECIFICATION SCOPE first before it
can appear in the CLAIM SCOPE.Specifically,
a subject matter which appears in the SPECIFICATION SCOPE necessarily appears in
the CLAIM SCOPE;

C. That discarded
by the applicant: The difference between the SPECIFICATION SCOPE and the CLAIM
SCOPE presents a scope (DIFFERENCE SCOPE), which might go into the public
domain.Such scope can be put into
the CLAIM SCOPE if desired but is not finally so done.The reasons might be that the applicant feels like not to claim that or
that the applicant does not have the opportunity to find out there is such scope
existent in its patent during the lifetime of the patent; and

D. That not
originally claimed but desired to be subsequently claimed and granted by law:
For example, before the allowance of a patent application, the applicant is
normally allowed to move the subject matter of DIFFERENCE SCOPE in the
specification into the claim.For
further an example, within two years from the date of issuance of a patent, the
patentee can broaden its protective scope by the reissue system in the US.Perhaps, we can call this RECOVERABLE SCOPE; and

E. That not
originally claimed but desired to be subsequently claimed and forbidden by law:
Such scope often is found when a competitor appears or the patentee desires to
curb an infringement but finds its claim scope then on file cannot successfully
read on the involved product and wants to broaden its scope, to which it is
originally entitled, in an attempt to succeeding in claiming infringement by the
competitor or the accused product.Perhaps,
we can name such scope to be FORBIDDEN SCOPE.Such scope is forbidden to be claimed because of:

a. Time limitation:
For example, the two-year term for the reissue expires, which will make an
effective protecting scope for the subject matter categorized in FORBIDDEN SCOPE
impossible; or

b. Legal event: For
example, earlier publication or post-grant publication of a patent application.This is different from the preceding item because it is clear that the
subject matter contained in FORBIDDEN SCOPE in the preceding item is not
protected in any way of a surety.Nevertheless,
it appears to be controversial whether the subject matter contained in this item
is really a forbidden scope because:

I. The pros will
say: Since such FORBIDDEN SCOPE has been published to the public without being
claimed or reservation, the potential rights possibly existing in such FORBIDDEN
SCOPE would have been driven into the public domain and could no more be
recoverable; and

II. The cons will
say: Such FORBIDDEN SCOPE is different from FORBIDDEN SCOPE in the preceding
item because that in the preceding item has been legally forfeited while there
is no law expressly providing that the applicant should also be deprived of that
in this item simply because there is an event in this item.In this regard, the article of previous issue of our newsletter might be
incorporated here for reference.

3. According to
Article 49(4), supplement or amendment according to its preceding paragraphs
shall not be made beyond the scope disclosed by the original specification or
drawings upon filing.Through the above discussions, we can find:

A. The
circumstances listed in Article 49(3) are all related to procedures before the
grant of a patent.It should be
relatively easier for us to believe that before earlier publication or
post-grant publication, it should be under our comfortable reliance that it is
justified for us to permit a DIFFERENCE SCOPE to be shifted into the CLAIM SCOPE
by such time.

B. It appears that
the later the supplement or amendment is made after the earlier publication or
post-grant publication, the more difficult or reluctant we will feel it
comfortable to permit such supplement or amendment.Specifically, there are two time points by which such circumstance is
involved:

a. After post-grant
publication: After post-grant publication, the CLAIM SCOPE is definite among the
patent office, the patentee and the general public for at least a certain period
of time.The potential allowability
to permit such supplement or amendment is minimum.Nevertheless, please refer to the reissue system in the US and our
preceding issue of newsletter; and

b. After earlier
publication but before post-grant publication: The potential allowability to
permit such supplement or amendment is larger than that of post-grant
publication because the application has not been allowed and is still under
prosecution but smaller than that of pre-earlier publication because the
application has been put in public inspection by which the general public has
possibly clearly understood which scope is prohibited and which kind of action
is allowed through the investigation and interpretation of the declared claims
contained in the specification.In this regard, we tend to believe that we should allow such
supplement or amend at such time period because:

I. The claims or
patent have not been allowed or the prosecution thereof has not been closed.Allowed such opportunity to rescue what it can originally avail of does
not confer unjustifiable interests on the applicant;

II. Although the
general public has already had an image as to what is the possible final scope
of the involved patent application, changing or broadening the imagined scope
should fall into the imaginable extent of the general public so that such
allowance to the applicant does not harm the rights of the general public to a
significant degree; and

III. If the
applicant can realize it should broaden or change its CLAIM SCOPE without the
involvement of a third party before its application is allowed, it is believed
that our sympathies will be invited under such circumstance since such
broadening or change is initially or primitively available thereby.

4. Certainly, there
also is a period between the receipt of an allowing action and the post-grant
publication, which might be considered independent of the above-described
periods.Theoretically, it is
believed that this short period should not be processed in a way different from
the period after earlier publication but before post-grant publication since we
cannot find out any reason which can underlie the latter two periods should be
differently handled.The reason why
the period in this item is pricked out or might be otherwise categorized is that
the normal procedure of an application before the official authority has come to
a supposed end.The official
authority does not like to be bothered again to take care of amendments in this
period.Similar situation can be
found, e.g. after receiving an allowing action, it is no more possible to change
the claim scope or even make any amendment under Taiwan patent practice.Although it might be impossible to change the claim scope after the
receipt of the notice of allowance, it is still possible to seek patented the
intended changed scope in a divisional application under the US patent practice,
which appears to be more humane.It
is believed that the law should leave room through which the applicant can try
to seek protected what it believes eligible to be protected so that the
applicant can have a healthy mind before the government.Specifically, even if the procedure before the authority has come to a
presumed end, the applicant should be allowed the chance to pursue what it
believes deserved to be protected.

*National security
(Paragraph 1 of Article 50)

In addition to the
Ministry of National Defense, whether an invention will likely influence the
national security, other national security related authorities, e.g. National
Security Bureau, National Security Conference, Investigation Bureau of Ministry
of Judicial Administration, National Science Council or Central Scientific
Research Institute should be included in the possible list of consultation.

*Offering for sale
and claim interpretation (Article 56)

According to Article 28
of TRIPs, offering for sale is a type of infringement so that this type of
infringement is included in the newly amended patent law.

In addition, in
interpreting the claims according to the new law, one may make reference to
specification description and drawings at all times rather than only when it is
necessary as in the current law.

*Divided patent
(to-be-deleted Article 68)

Under current articles
or practice, another application is dividable from the original claims or the
specification.According to the IPO,
a divided patent after grant under current Article 68 is allowable but should
not be permitted because:

1. The claim scope
should not be broadened after grant: It would appear that the allowance of a
divided patent needs not be related to the broadening of a claim scope because
just as recognized by the IPO, a divisional application can divide the subject
matter either from claims or specification.As such, it is a kind of re-capturing behavior rather than
scope-broadening action.On the
contrary, if allowing such division is broadening the scope, how we can stand
before the fact that the IPO allows shifting the subject matter from the
specification not originally in the claims into the claims during the opposition
or invalidation proceedings?Specifically,
why the subject matter shift in a normal application should not be allowed but
that in an application in dispute should be allowed?Furthermore:

A. If shifting the
subject matter from the specification into the claims is permissible in the
dispute proceedings, should the applicant so attempting utilize such measure,
trying to find someone to invalidate or oppose its application, to rescue the
DIFFERENCE SCOPE?Is this justified?

B. If shifting the
subject matter from the specification into the claims is permissible, why the
current law provides that only DIFFERENCE SCOPE which has a protecting scope
smaller than that of the original claim scope can be shifted into the claims
after the grant?Is it because that
which has not been claimed has gone into the public domain?If this is the case, why only the larger protecting scope is prohibited
but the smaller protecting scope which has also gone into the public domain not?From these reasoning, can we understand again that the US
reissue system having two-year time limit is very reasonable?

2. The divided
patent will be different from the original one: This reason is funny since if
the divided patent is the same with the original one, why it becomes necessary
for the patentee trying to divide a new application;

3. The claim scope
of the divided patent will be changed: This reason also sounds funny too since
if the divided patent has not a changed scope, it must be the same with the
original one, and the question goes back to the preceding one;

4. The IPO needs
to examine whether there is a scope sought beyond the original one for the
divided patent: It is unclear what is exactly meant by ‘sought over’?Does it mean a different scope from or a larger scope than the original
scope?Either of them will go to the preceding items respectively.

5. The divided
patent will complicate the examination procedure: This should not be a reason
because it should be able to be overcome by imposing official fee if necessary.

6. The divided
patent will make the protected scope uncertain through its change: If a change
is necessary or justified, it must ensue a change in the protecting scope.If the change in the protecting scope is realizable, what kinds of
disadvantages can be identified if there is an uncertainty in the protected
scope?

7. There is no
legislative precedent as to the allowance of a divided patent: This appears to
be untrue in view of the clause, ‘the Director may issue several reissued
patents for distinct and separate parts of the thing patented, upon demand of
the applicant,’ in Paragraph 2 of Section 251 of the US Patent Law.

Under the current law,
reason or evidence the invalidator supplements shall be submitted within one
month from the date initiating the invalidation proceedings.According to the newly amended law, they shall still be considered if
submitted before the action on the merits of the invalidation proceedings is
rendered.Such amendment is
preferred because:

1. The current law
provides reason or evidence shall be submitted within one month from the
initiating date.Such provision
will raise the following problems, i.e. when they are submitted after one month,
whether they should be considered?

A. If yes: The law
will be insulted since the one month period serves no meaning.In addition, after the case is presented to a government authority of a
higher level so far as the remedy is concerned, such government authority might
not have the competency to consider the newly submitted reason or evidence since
its examining or trying members normally are not well-equipped in patent skill
or knowledge;

B. If not: It will
raise the following questions:

a. Since the later
submitted or new reason or evidence are not considered by the IPO while its
examining the application, the action it renders should not be repealed simply
because these new reason or evidence will change the results of the action
should they have been considered by the IPO since this will mean the original
action rendered by the IPO is correct and a correct action shall never be
repealed.Accordingly, the
interested party can only initiate an entirely new proceeding to pursue the
matter by such new reason or evidence.This,
however, is not cost- or procedure-effective;

b. Nevertheless, according
to the codes of civil, criminal or even administrative proceedings, the first
instance or second to last instance of the court proceedings can review all
kinds of facts and legal applications.Accordingly,
those which are prohibited to be considered in the previous stages of
administrative disputes or remedies shall come naturally into the purview of
review.Are we comfortable about
this?

c. The most critical or
serious matter is that according to the principle of res judicata, shall we deny
or permit an interested party to institute a new proceeding based on reasons and
evidences which are prohibited to be considered in the previous stages but have
come into the purview of review by the court?The difficulties we have here include:

I. Although these reasons
or evidences are not considered in the previous stage, they have been
investigated by the higher authority or the court so that they should not be
used as a new issue or cause of action for instituting a new proceeding;

II. Although these reasons
or evidences have theoretically or legally been considered by the higher
authority or the court, whether they have been properly considered is doubtful
so that they should serve as a new issue or cause of action to be competently
pursued in a new proceeding in order to be satisfactorily, reliably and duly
taken into consideration.This is
because the persons or the judges in the higher authority or the court normally
are not believed to personally have the reliable special technique or skill for
rendering a proper action or decision as those in the previous stage.

2. Accordingly,
such law amendment deserves encouraged.

*Reduction or
exemption of the annuity (Article 83)

The
newly amended Article 83 stipulates that “being natural person, school or
medium- or small-sized enterprise, the invention patentee may petition to the
patent-dedicated office for deduction or exemption of the patent annuity; the
regulations of conditions, year periods, amounts and other matters to be
followed regarding the deduction or exemption shall be prescribed by the
responsible authority.”Under the
current law, only the patentee or its successor having no financial capability
to pay the annuity can request for the reduction or exemption.According to the IPO, the current law is amended because:

1. It is unclear
what is meant by ‘no financial capability’;

2. There are very
few very few such petitions;

3. To achieve the
legislative goal of encouraging and protecting the creation, it should be
clarified as to who can enjoy such provision;

4. Since natural
person, school or medium- or small-sized enterprise are weak parties in the
economically competing environment, which can be understood from the fact that
the percentage of patents obtained by medium- or small-sized enterprise is not
proportional to that of their number, and it requires a period of time for
seeking cooperation for commercialization after they have obtained the patents,
the law will not in this way express its spirit of promoting the industrial
development;

5. There are
similar foreign precedents in this regard.We do not know whether the IPO is mentioning the small entity adopted in
the US and Canada.If yes, it is
unclear why only the annuity, but not including the filing fee, is applicable?

*Rights of exclusive
licensee (Paragraph 2 of Article 84)

According
to the current Article 84, the patentee may claim damages, petition to preclude
the infringement and petition to prevent from it in the event of likelihood of
an infringement.Such rights can be
exercised by the exclusive licensee only when the patentee so requested does not
so enforce, which is considered to be too much strict for the exclusive
licensee.As such, the amended law
revise the article and make it clear that the exclusive licensee can also
enforce such rights unless agreed upon in a contract.

*Propriety of
Invalidation (Paragraph 2 of Article 90)

Similar
to the case as happening in the opposition, the potential infringer or
interested party can use the invalidation proceedings to request on the one hand
that the court suspends the action pursuing infringement until the invalidation
proceedings have been irrevocably rendered while instituting another
invalidation proceedings with nominally or formally different reasons or
evidences on the other hand so that it is uneasy for the patentee to enforce its
rights.Accordingly, the amended
Article 90(2) makes it clear that the court, upon deciding to suspend the
infringement action, shall take note of the properness of submission of the
invalidation proceedings, by which the court can decide not to suspend or resume
the trial of an infringement action.

*Registration of
utility model (Article 97)

According to the IPO,
the reasons why the utility model adopts the registration system without
examination include:

1. In this knowledge
economic era, the information development greatly advances and the life period
of kinds of technological products is getting shorter and shorter so that the
inventor is more eager to anticipate that his invention can be put into market
efficiently: This reason is specious and spurious in that:

A. Any invention can be put
into the market regardless of whether it has been patented;

B. Whether a utility model
is registered is irrelevant to whether the product or the invention should be
put into the market because:

a. Any one who has
some patent knowledge will know the utility model is merely registered so that
it is not a ‘concrete’ right;

b. In order to
prevent the utility model registrant from abusively enforcing the utility model
right, the law has provided that a technical report should be prepared before it
can take any legal action.Such
technical report is more or less similar with the formal examination of the
current substantive examination for patent or utility model.If the registrant can claim its rights only after a technical report is
submitted, what is the relevancy of the time when the invention is put into the
market with whether a mere registration is required for the utility model?

C. The key factor might
reside in that a patent application can only obtain provisional protection after
18 months from the filing or priority date or concrete protection after grant
while, both of which are too long: Nevertheless:

a. If 18 months are
too long, why it is not considered to shorten this period?

b. If the grant
procedure is time-consuming, why it is not considered to be time-effective?

c. If the utility
model can adopt the registration system, why the patent cannot?

2. In the patent system of
primary countries, e.g. Japan, Korea and Germany, they have dropped the
substantive examination system but instead adopts the formal or basic
requirement examination for the utility model of a lower technical level in
order to empower the rights to the applicant as early as possible: Here, we
have:

A. We do not know how the US
or her patent attorneys feel after getting known to the fact that a utility
model of a lower level in Taiwan can often be granted a utility patent?

B. We do not know whether
there is an organization in the world investigating whether the patent system
having the utility model is running more well than that having no utility model?

3. It is interesting to
consider or discuss the differences between the provisional protection of a
patent (the former) and the formal protection of the registered utility model
without a technical report (the latter).Specifically:

A. The former in fact
protects nothing but reserves the rights or possibility to retroactively claim
damages.Likewise, the latter
protects nothing unless a technical report is rendered;

B. The former can enjoy the
rights of enforcement only after an unanticipated period of time because the
examination term is not predictable.Likewise,
the latter can enjoy the enforcement rights only after the technical report has
been completed, which period is relatively shorter.Nevertheless, why it is necessitated that the period of rendering the
technical report is shorter than that of examining a patent?Can’t we let that these two periods are equal or even the examination
period of a patent is shorter than the rendering of the technical report?Is this impossible because:

a. The examination
of a patent is to be responded or argued by the applicant while the technical
report is not?

b. Why must the
technical report be correct?If we believe that the technical report does not necessarily
be correct, why don’t we allow the applicant to argue its contents?This is simply because we do not want the technical report to be
simulated to an office action?

C. The former cannot be
enforced before the court because it is a right of anticipation while the latter
can because it is a legally concrete right.

4. It is also interesting to
ascertain the differences between no protection (the former) and the formal
protection of the registered utility model without a technical report (the
latter).Specifically:

A. The former has no right
at all while the latter merely has a nominal right before the technical report
is rendered;

B. It is admitted that a
nominal right is an intermediate between no right and a concrete right.Nevertheless, we would like to point out one skilled in the
patent-related knowledge might not respect too much about such nominal right;

C. The former is nothing
while the latter can really become something after some procedure is taken.

5. It deserves to
investigate the differences between the technical report (the former) and the
substantive examination (the latter).Specifically:

A. The former is only used
for important reference while the latter can be transformed into a concrete
right if favorable;

B. The former is not
contestable before the patent office while the latter is.It is funny to note that if the examiner in the latter can make a
mistake, why an examiner in the former cannot?

C. It is uncertain whether
the criteria exercised in rendering the former and the latter are the same?If yes, why the former should be used to examine a creation of a lower
inventive step?For a creation of a
lower inventive step, shall we apply the same judging criteria with those for
the latter?

*Technical report
for utility model (Article 103)

In
the above item, we have discussed the Utility Model Technical Report a lot.Such technical report can be petitioned by any one.According to the IPO, such technical report is justified because:

1. The right
contents of a registered utility model exist a lot of instabilities and
indefiniteness.If the registrant
abusively enforces such uncertain rights, a great damage will be brought forth
toward technical utilization and research of a third party;

2. Through the
provision that any one can petition the technical report, the system of public
inspection can be simulated.Nevertheless,
such technical report is not binding on but merely provides reference for the
relevant governmental authority.

The petition for technical report, which
has been published in the Patent Gazette shall not be withdrawn in order to
safeguard the rights of the interested party.

*Enforcing utility
model patent (Article 104)

According
to the IPO, since the utility model patent is not subject to the substantive
examination, an objective judging data, i.e. the technical report, should be
submitted upon enforcing the rights derivable from a utility model patent.This is not to limit the rights of litigation by nationals but to prevent
the abuse of rights by the registrant.This
can be made clear through the following facts:

1. A civil
proceeding can still be instituted even the utility model registrant does not
depose the technical report; and

2. It is not
necessitated that the court will reject the entertainment of an action which is
not accompanied by a technical report.

*Damages and
non-negligence (Article 105)

In
order to prevent the utility model registrant from abusively enforcing its
rights, the first Paragraph of Article 105 provides that “if the patent rights
are cancelled, the utility model patentee shall be responsible for damages
caused by its enforcing the utility model patent rights against the other before
the cancellation,” by which the registrant must prudently enforce its rights.If, through due diligence, the registrant knows that the utility model
rights might be cancelled, there might exist negligence on the registrant.

Nevertheless,
the second Paragraph of Article 105 stipulates that “if the rights in the
preceding paragraph are enforced based on contents of the utility model
technical report or through due diligence, a non-negligence shall be
presumed.”Specifically,
according to the IPO:

1. Since the
technical report can only be rendered after a certain period of time, it is
impractical for the law to require that the utility model registrant can only
enforce its rights after the technical report is rendered so that the damages of
the registrant will not be expanded;

2. Accordingly, if
the registrant has deliberately consulted the relevant experts, e.g.
attorneys-at-law, patent attorneys or experts to obtain a confirmation on its
right contents, it is not blamable.

*Claims for design
(Article 116)

According
to the IPO, design patents primarily differ from invention or utility model
patents in that a design is directed to an improvement or enforcement on the
overall appearance of an object.Whether
such requirement is met can be judged upon examination from the drawings
submitted upon filing so that the recitation of claim in a design application is
unnecessary.It might be
controversial for the present article to require a claim in a design
application, which is seldom found in legislative precedents so that the
requirement of requiring a claim in a design application should be abolished.

*Unity of Design
(Article 119)

Paragraph
1 of Article 119 stipulates that “a design patent application shall be filed
for each design,” by which it means:

1. A design is to
mean a single embodiment; and

2. A design
relates to a creation of an esthetical appearance while an invention relates to
a technical innovation so that it is improper for a design to apply mutatis
mutandis the article for the invention patent.

*Abolishment of
penalties

According to the IPO,
although Article 61 of WTO/TRIPs provides that there should be criminal
proceedings and punishments for behaviors of counterfeiting trademarks and
infringing copyrights, it is up to the option of respective country as to
whether there should be criminal punishment for a patent infringement.Since in the oceanic system, the patent infringement merely involves in a
civil liability and there are few cases in the continental system to incur a
criminal liability thereby, the penalties for patent infringement should be
abolished.

Penalties for invention
have been abolished on October 24, 2001 while those for utility model and design
are maintained, which is unreasonable since the technical level for utility
model and design is lower than that of invention, which will result in
unfairness and illogicality in weighing the matter.

Especially, the
substantive examination for utility model has been abolished so that it is
uncertain whether a utility model patent does meet with the substantive
requirements.Since the national of
this country is prone to resort to the investigation rights, e.g. searching or
seizing the property, of a public prosecutor to act against the competitors
through the penal articles, it is easy to result in irreparable damages to the
competitors in business or reputation so that penalties should be abolished.

*Transition clauses
(Paragraph 2 of Article 134 and Article 138)

Since
the durations of patent terms for invention, utility model and design are
different in various law amendments, there should be standards as to how the
patent terms of patents allowed in different periods should be counted.In this regard, please refer to various amended articles if interested.

Amended Article 138 provides that
“except Article 11 of this Law which shall take effect on the date of its
promulgation, the effective date of the rest articles shall be designated by
Executive Yuan.”This is because
several significant amendments have been made so that there must be time for the
preparation of the administrative organizations and for the understanding and
accommodation of the relevant sectors.

Claims
We Have:

1. To
escape from the shortcomings of a system, e.g. the opposition system is not
necessitated to abolish the (opposition) system.Similarly, abolishing a system, e.g. the opposition system needs not be a
must to obviate the shortcomings accompanying the opposition system.

2. Having
solved a problem in appearance needs not necessarily have really solved to the
root of the phenomenon we are troubled while it is believed to be very
controversial as to what is an ultimate solution to the core for the problem.As a matter of fact, whether a problem in a system is really a problem is
a problem.Specifically, edging
into the situation constructed by troubling phenomena in a correct manner to
find real problems to be dealt with and solved in a right style is never a
simple science.Fortunately, the
patent law gets more and more harmonized, which means that with the brainwave
input and wisdom contribution from patent experts all over the world, it appears
to be safe for us to take that amending a local patent law to be in more
compliance with an internationally harmonized patent practice normally will not
get a real trouble.

3. The
word ‘scope’ in the patent system includes ‘scope of claims’ and
‘scope of disclosure.’Accordingly,
the scope disclosed by the original specification will
theoretically include CLAIM SCOPE, SPECIFICATION SCOPE and DIFFERENCE SCOPE
representing the difference between the former two.The latter DIFFERENCE SCOPE includes that discarded by the applicant,
that not originally claimed but desired to be subsequently claimed and granted
by law (RECOVERABLE SCOPE), and that not originally claimed but desired to be
subsequently claimed and forbidden by law (FORBIDDEN SCOPE).

4. It
should be relatively easier for us to believe that before earlier publication or
post-grant publication, it should be under our comfortable reliance that it is
justified for us to permit a DIFFERENCE SCOPE to be shifted into the CLAIM SCOPE
by such time.The later the
supplement or amendment is made after the earlier publication or post-grant
publication, the more difficult or reluctant we will feel it comfortable to
permit such supplement or amendment.We
tend to advocate that we should allow supplement or amend in the time period
after earlier publication but before post-grant publication.Our position will not change even in the period between the receipt of an
allowing action and the post-grant publication.

5. It shall
never be difficult to find conflicts or unjustness in the laws, e.g. although
there exist those which are prohibited to be considered in the previous stage of
administrative disputes or remedies but can come naturally into the purview of
review by the higher authority or the court, said those are never duly
considered by said previous stage or competently reviewed by the court.People can live on earth better only when officials diligently find here
and there whether what kind of law amendment can relieve such hardship.

6. It is
interesting to consider or discuss the differences between the provisional
protection of a patent and the formal protection of the registered utility model
without a technical report, the differences between no protection and the formal
protection of the registered utility model without a technical report and the
differences between the technical report and the substantive examination through
which we can find or understand better what are advantages and disadvantages of
the registration system of a utility model or whether the utility model should
adopt the registration system?